Istituto Erboristico Italo Tedesco L'Angelica SpA v Medestea Internazionale SrL

[2002] ATMO 53

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Istituto Erboristico Italo Tedesco L'Angelica SpA to registration of trade mark application 772973(5) - SANT'ANGELICA - filed in the name of Medestea Internazionale SrL.

Background

Trade mark application number 772973 is an application to register the words sant'angelica in class 5 for the following goods (as amended by the applicant prior to hearing on 19 March 2002):

Pharmaceutical preparations; dietetic substances adapted for medical use; pharmaceutical and herbal preparations, including preparations in capsule form for the assistance of blood circulation and to improve bodily appearance in such conditions as cellulitis

The trade mark is shown thus:

The application was filed on 14 September 1998 ("the relevant date") by Medestea Internazionale S.r.l. of Turin Italy ("the applicant"). 772973 was duly examined and, on 21 January 1999, the Registrar advertised, in the Australian Official Journal of Trade Marks, that he accepted this trade mark for registration.

On 3 March 1999, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), Istituto Erboristico Italo Tedesco L'Angelica SpA. of Via Galleria 81 Funo di Argelato, Italy ("the opponent") filed opposition to the registration of 772973.

The opponent listed 15 ground of opposition in its notice of opposition. However, prior to the hearing it advised that it relied on two grounds of opposition as follows:

1. the applicant's trade mark is deceptively similar to the opponent's mark 647255, which has an earlier priority date and which is registered in respect of the same or similar goods;

2. the applicant has no intention to use its mark in respect of at least some of the goods covered by the application;

As a result of the amendment to the statement of goods, the opponent did not rely on the second ground of opposition, as it had been rendered nugatory as a result of the amendment.

The opponent did not serve or file any evidence in support of its opposition. The opponent's mark is shown as follows:

The opponent's registration is in class 5 for:

Pharmaceutical and sanitary preparations; dietetic substances adapted for medical use, food for babies; parapharmaceutical products for dietetic use; vitamin preparations and micronutrient (trace element) preparations for human consumption; food supplements based on vitamins and on micronutrients (trace elements) for human consumption and intended for dietetic and medical purposes; herb teas

On 3 March 2000, the applicant served on the opponent, and filed with the Trade Marks Office, two statutory declarations as evidence in answer to the opposition.

On 6 March 2001, the opponent served on the applicant, and filed with the Trade Marks Office, two statutory declarations as evidence in reply.

The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 19 March 2002. The opponent was represented by Ms Celia Cummings of Freehills Carter Smith Beadle of Melbourne, who appeared by video link. The applicant was represented by Mr Peter Hallett of Griffith Hack of Melbourne, who appeared by telephone link.

Evidence

The evidence comprised:

Declarant	Status	Dated	Exhibits	Known As
Evidence	in Answer
Graham Potter	Company Director	27/01/00	A to C, GP-1 & GP-2	Potter
Merizzi Gianfranco	President Medestea Internazionale Srl	21/02/00	1 to 5	Gianfranco
Evidence	in Reply
Paolo Gualandi	Managing Director Istituto Erboristico l'Angelica SPA	9/02/01	1 to 3	Gualandi
Anne Helen Makrigiorgos	Partner, Griffith Hack	6/03/01	AHM-1	Makrigiorgos

Submissions, Considerations and Findings

Ground 1: Section 44 - Deceptive Similarity

Section 44, in so far as it is relevant, reads:

Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

The opponent's trade mark has a priority date of 3 July 1995, which is earlier than the applicant's trade mark.

The matters for determination are therefore:

(a)whether the applicant's mark is deceptively similar to the opponent's registered trade mark in that it so nearly resembles that mark that it is likely to deceive or cause confusion (Section 10); and

(b)whether the opponent's trade mark is registered in respect of similar goods or closely related services.

The parties both referred to the usual authorities and there was no material disagreement as to the appropriate tests to be applied. It was common ground that the opponent's mark was registered in respect of similar goods.

The only issue to determine, therefore, is whether sant'angelica is deceptively similar to istituto erboristico l'angelica.

The opponent pointed out the following similarities between the marks:

• the most prominent feature of each mark was the word angelica, in plain block capitals, and preceded by an apostrophe;

• the word angelica appears below a device in both marks;

• the device in both marks is a building in a classical style, reminiscent of a temple or institute;

• both marks feature a semi-circular element towards the top of each device;

• the word angelica appears between parallel lines in both devices; and

• both marks suggest an Italian association.

The opponent submitted that the overall impression created by each mark is of the word angelica with the device of a building/structure and having an Italian feel. The opponent emphasized that deceptive similarity was to be assessed by the overall impression, rather than a side by side comparison.

The opponent also pointed to the applicant's conduct in the USA, where the applicant had successfully opposed the registration of opponent's application (corresponding to its Australian registration) on the grounds that it was deceptively similar to the applicant's US registration (corresponding to its Australian application). This, the opponent argued, was a virtual admission that the co-existence of the two marks would be likely to cause confusion.

While the applicant generally agreed with the overall means of comparison of the marks, the specific points of similarity were not agreed. The applicant disagreed with the opponent's characterization that both marks gave an overall impression of the word angelica with the device of a building/structure and having an Italian feel.

The applicant submitted that the marks must be compared in their entireties and having regard to the first and overall, general impressions and significant detail. The fact that two trade marks contain an element or idea in common is not sufficient in itself to create a deceptive resemblance between them. If marks look or sound alike, a common element or idea may be taken into account in deciding whether there is a likelihood of deception. The applicant submitted that the doctrine of imperfect recollection should not be ascribed beyond the class of persons possessed with ordinary possibilities of bad elocution, careless hearing or defective memory.

The applicant submitted that its mark had a saintly or angelic feel. The woman in a toga, near a portico, could be a saint as suggested by the words sant'angelica below the device. The portico conveyed a more Greek flavour than Italian. The overall feeling of the mark was serenity, purity, and goodness. In comparison, the applicant submitted that the opponent's mark comprised a building, with an Oriental-style roof, above three long words in white on a bold, dark background. It was submitted that there were distinctly different ideas of the respective marks, the only item of similarity being the word angelica preceded by an apostrophe.

The tests for deceptive similarity lie in the words of Windeyer J in Shell Company of Australia Ltd v ESSO Standard Oil (Australia) Ltd[1]:

[1] (1963) 109 CLR 407, at 414

The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.  To quote Lord Radcliffe again (de Cordova v Vick Chemical Co (1951) 68 RPC 103; at 106; 1B IPR 496; at 499):

The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him…It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

And in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658; Dixon and McTiernan JJ said:

In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.

The High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[2] said that deceptive similarity is established if:

[2] (1954) 91 CLR 592

[t]here is a real risk that the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source.

As to what is meant by "a number of persons", I note that in a recent decision of this Office, Kellogg Company v Exxon Corporation[3], Hearing Officer Williams made the following observation in this regard:

[3] (2001) ATMO 67

In Registrar of Trade Marks v Woolworths, supra, French J said something of s 44 that is, with modification, applicable to s 60. That was, deleting words that are inappropriate to s 60:

A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or ... services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

I do not believe that French J was suggesting, in referring to "some people", that it would be sufficient if a mere handful of people would be left in doubt. Firstly, I do not believe that he was attempting to modify his previous stipulation, for which there is long-standing authority in a case to which he had just referred, that the doubt that must afflict the " ordinary" person must be a "reasonable" one. Secondly, the formulation requiring that the number of people affected by doubt or confusion be " substantial" has been repeatedly endorsed. The onus has shifted, but not the benchmark. The latter comes from Smith Hayden's Application and Kendall Company v Mulsyn Paint and Chemicals, where Kitto J repeated and expanded what he said in Southern Cross. He added the reference to " substantial" as an express adoption of that formula from comparable UK decisions subsequent to Smith Hayden.

In considering this matter, I have taken into account the word (with preceding apostrophe) common to both trade marks. However, the marks also contain distinctively different devices. I am of the opinion that the ideas of the marks are quite different.

The applicant's mark relates to a person (presumably Saint Angelica) and is quite different to the opponent's mark, which relates to a building or institution (presumably the Angelica Herbalist Institute). The idea of the applicant's mark is more abstract and ethereal, while the opponent's mark is more businesslike and assertive.

The potential customers for the kind of goods provided by both parties, that is pharmaceutical goods, are likely to take due care when purchasing such goods and less likely to be confused or mislead by the superficial similarity between the opposing marks. I am not satisfied that there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

I find that the opponent's evidence and submissions regarding the applicant's apparently successful opposition to the opponent's application for registration of the istituto erboristico l'angelica mark in the USA to be irrelevant. The evidence tendered was the USA equivalent of a notice of opposition, and a schedule of worldwide trade mark application status showing the USA application as rejected. There is no evidence of the reason for the rejection of the opponent's USA application and, in my opinion, it would be an unwarranted distraction from the task at hand to make further inquiries. In any event, the findings in a foreign jurisdiction would not necessarily involve the application of the same or similar principles as applied in Australia. The opponent has the burden of showing that the USA decision is relevant to these proceedings; however, it has not done so.

Given all of the above considerations, I am not satisfied that the applicant's trade mark is deceptively similar to the mark already registered by the opponent.

Accordingly, I find the opponent is not successful on this ground of its opposition.

Decision

The opponent has not established any of its grounds of opposition. Therefore, the applicant's trade mark may proceed to registration unless, within one month from the date of this decision, the Registrar is served with a copy of a notice of appeal.

Costs

Both parties sought their costs, primarily on the basis that if they were successful costs should follow the event.

The opponent further submitted that should it be unsuccessful, it either should receive costs thrown away due to the late amendment by the applicant to the statement of goods, or alternatively there should be no order as to costs.

The applicant submitted that it had been required to prepare for each of the grounds of opposition, although only two were to be pursued at the hearing. The fact that the opponent only intended to pursue two grounds was only communicated to the applicant the day before the hearing.

The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule. The late notice of amendment of the statement of goods by the applicant would seem to be due to the late notice by the opponent of the ground of opposition to be relied upon at the hearing.

Accordingly, I see no reason why costs should not follow the general rule. I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995)

Jock McDonagh

Hearing Officer

Trade Marks Hearings

26 June 2002